U.S. Army to Oppose NHL Franchise’s Trademark Registration

The expansion Las Vegas Golden Knights are doing very, very well—they might just be the greatest expansion team in the history of North American sports. But behind the scenes, the new hockey team, and first pro franchise to set up shop in Las Vegas, is caught in a bit of a legal tussle: The United States Army is filing a formal “opposition” to the team’s trademark registration application.

Oppositions are adversarial administrative proceedings—a bit like mini trials—heard before the Trademark Trial and Appeal Board (TTAB),[1] which adjudicates a variety of trademark proceedings at the Patent and Trademark Office (PTO).[2] The U.S. Army is asking the TTAB to prevent the NHL franchise from registering “Las Vegas Golden Knights” and “Vegas Golden Knights” as trademarks for a professional hockey team.

In a January 10 filing, the Army argues, among other things, that use of the words “Las Vegas Golden Knights” for live sporting events is likely to confuse consumers between the source of the hockey franchise and the U.S. Army competitive parachute team, also called the Golden Knights. “If applicant is allowed to register exclusive rights in Vegas Golden Knights . . . the public is likely to be confused as to whether the U.S. government or the applicants controls the quality and nature of the services or endorses or sponsors applicant’s services,” the Army wrote in its notice.

The Army is also arguing that the Las Vegas Golden Knights proposed trademark “dilutes” the U.S. Army brand and “creates a false impression of endorsement or association” between the U.S. Army and the hockey franchise. The Army filing also points out similar styling and colors as potential sources of confusion, dilution, and false impression.

The Army does not have a registration for its claimed mark, but the Army still has a right to argue its Parachute Team “Golden Knights” name has all the elements of a trademark, and therefore is entitled to legal protection.[3]

If the Army prevails in opposing the “Las Vegas Golden Knights” and “Vegas Golden Knights” marks, the franchise could face potential lawsuits from the Army if it continues to use the name. The franchise could choose to change its name or negotiate a settlement with the Army.

This is not the first time the young NHL franchise has faced trademark trouble. In late 2016, the PTO rejected “Las Vegas Golden Knights” trademark registration for t-shirts, hats, and other merchandise, due to high likelihood of confusion with the preexisting College of Saint Rose Golden Knights trademark. That application is still working itself through appeals and related procedures.

(The University of Central Florida also formerly held a trademark registration for “Golden Knights,” but those registrations are now canceled. UCF teams are now known simply as “Knights.”)

TTAB oppositions can take around one year to complete, so we shall wait and see what happens!

–Andrew Levitt


[1] See 15 U.S.C. §§ 1063, 1071; See also T.B.M.P. § 102.02.

[2] Oppositions involve a complaint (known as a notice), an answer, a brief discovery period, motions for summary judgment—all the characteristics of a trial, but relatively accelerated and applying less formal rules. The most dramatic difference between an opposition and an Article III trial is that in an opposition there is no right to a live in-person trial. Instead, the parties present testimony and evidence remotely during designated “testimony periods” and the TTAB decides the case based on a written record.

[3] 15 U.S.C. § 1125(a).

Radiohead is suing Lana Del Rey for copyright. How can the jury tell?

English rock band Radiohead is reportedly planning to sue American pop star Lana Del Rey for copyright infringement, from similarities between Del Rey’s 2017 song “Get Free” and Radiohead’s breakthrough 1992 single “Creep.” In a tweet, Del Rey confirmed that Radiohead had refused a settlement offer, and are seeking her profits. Compare “Creep” and “Get Free” on YouTube. (Content warning: profane lyrics.)

Copyright for a work of music covers both the music itself and the lyrics.[1] Radiohead is suing for infringement of their musical composition, specifically arguing that the rhythm, melody, and harmony of the verse of “Get Free” copy the verse of “Creep.”

To prevail, Radiohead must prove that (1) it owns a valid copyright for “Creep” and (2) Lana Del Rey copied “Creep.”  To prove copying, Radiohead will require admissions or testimony that Del Rey had (1) “access” to “Creep” when she created “Get Free”[2] and (2) the works are “substantially similar.” Mere commonalities are not enough; the jury must be able to infer that Lana Del Rey had heard “Creep” and actually copied protected elements from it.

Access is proven by direct or indirect evidence, such as witness testimony, evidence of a relationship between the artists, evidence that the copyrighted work is well-known, or evidence that the works are so similar that the infringer must have had access to the copyrighted work.[3]

To prove “substantial similarity,” Radiohead will try to establish that Del Rey copied “Creep” such that an “ordinary observer” can tell that one song was copied from the other. With regard to musical works, courts have accepted many musical elements when comparing two works for similarities, including melody, harmony, rhythm, pitch, tempo, phrasing, timbre, new technology, spatial organization, bass lines, overall structure, and more.[4] Melody, harmony, and rhythm are typically the most important. The more elements in common, the more likely Radiohead will prevail. Another way of establishing “substantial similarity” is by “total concept and feel,” which is a less reductionist and “scientific,” and sometimes controversial, way to compare works.

Proving substantial similarity in court is complicated, though. Artists’ songs typically carry two copyrights: for the composition and for the audio recording. Radiohead is accusing Lana Del Rey of infringing their composition, not their recording—she did not publish a copy of Radiohead’s 1992 recording. The audio recording can help the jury assess the music composition, but there are complications: often, the recording carries additional elements beyond what’s on the written page, and sometimes contains unprotected elements such as background samples of public domain music. In such cases, jurors might only be permitted to hear stripped down audio recordings that contain only copyright-protected elements.

It is likely that most jurors cannot read sheet music and do not have knowledge of music theory. Therefore, musicologists are often called as expert witnesses to analyze the compositions, and walk jurors through sheet music.

Ultimately, it is up to the jury to decide whether the works are substantially similar, and juries are unpredictable. Most of these cases settle long before a jury verdict, which is probably what will happen between Radiohead and Lana Del Rey. Still, the likelihood of prevailing at trial will affect the parties’ settlement negotiations.

What do you think? Do the songs sound substantially similar?

–Andrew Levitt


[1] 17 U.S.C. § 106.

[2] See e.g., Three Boys Music Corp. v. Bolton, 212 F.3d 477, 482 (9th Cir. 2000).

[3] See, e.g., Gaste v. Kaiserman, 863 F.2d 1061, 1068 (2d Cir. 1988).

[4] See, e.g., Swirsky v. Carey, 376 F.3d 841, 849 (9th Cir. 2004).

Is This Thing On?

A few years ago SIPS kept an active and engaging blog devoted to events happening on campus and developments in the intellectual property field.

Then that stopped.

Now, we are trying to start again. Wish us well.

Guest Speaker: Julia Bishop

SIPS Speaker September 22, 2015: Julia Bishop

Julia Bishop currently works an associate for Troutman Sanders.  She earned her J.D. from the College of William and Mary in 2010 and has been working in the IP field since.  Julia Bishop’s current practice focuses primarily on intellectual property law, namely trademark and copyright law, and internet law, but her representation ranges in scope.  More specifically, her practice involves litigation and pre-litigation, fair-use based copyright infringement cases, and licensing agreements.

During her presentation, Julia Bishop offered advice on how to approach a career in IP law and how to succeed once you are there.  Emphasized was the concept of being a citizen lawyer.  As a lawyer you are put into position of power where you have the ability to help people.  It is important to do the best work you can for clients and to occasionally take pro bono cases.  Making the people the source of your motivation can be very helpful.  As a new attorney, it is not as necessary to bring in new cases, however it is always helpful and will lead to raises.  The best way to get new clients is by doing great work for the clients you currently have.  Reputation is everything to an attorney.

In her career, Julia Bishop worked at a number of firms and clerked for the Norfolk Circuit Court.  She noted the importance in being able to turn down an offer or leave a job if it is not what you want.  If you position yourself correctly and realize your own value, you will eventually find a job you are happy with.  Julia Bishop noted that her time clerking was a great experience and was very helpful to her career in litigation.

Additionally, Julia Bishop stressed the importance in taking an active role in law school by getting involved with a journal, a bar, and/or discussion courses.

– Ryan Klima
JD Candidate, 2018

2014 Summer Networking Program Recap

By Mark Cramer, SIPS Vice President for Career Outreach and Alumni Relations

Summer Networking Cities

We’ve just wrapped up another great year of SIPS’ annual Summer Networking Program! More than 20 alumni participated in the program this year in DC, Richmond, Boston, Norfolk, Cincinnati, and San Francisco. Our alumni generously offered their time and advice to current and graduating SIPS members, sharing their perspectives on surviving law school, excelling at the job search, and maintaining a balanced life while practicing law. They represented a variety of career paths including private practice, business, government, and academia.

The SIPS team is incredibly grateful to all of our participants – this continues to be a successful program for us, and we really value the chance to spend time with practitioners and continue building the W&M IP Law community. Thank you again to our alumni participants across the country for your support!

This is not a copy of a coffee shop, just a parody. That sells coffee.

By Dave Johnson

Dumb Starbucks Menu Board

Over the weekend, a parody coffee shop called “Dumb Starbucks” opened in an affluent suburb of Los Angeles. Dumb Starbucks closely imitates the interior design elements of the average Starbucks coffee shop; uses a nearly identical logo (the only change is the compression of the word “Starbucks” to allow room for the word “Dumb”), identical fonts and colors; and sells coffee. Dumb Starbucks is also found in a strip mall, much like many Starbucks locations. Photos of the storefront and interior signage can be found on Dumb Starbuck’s Twitter feed (@dumbstarbucks). The menu is very similar to that of Starbucks, except with the word “Dumb” before every menu item. Interestingly, Dumb Starbucks appears to be giving its coffee away for free, but purports to sell the coffee. Rachel Zarrell & Ashley Perez, Peope Are Waiting For Hours to Visit a “Dumb Starbucks” Coffee Shop in California, BUZZFEED (Feb. 9, 2014, 5:30 PM), http://www.buzzfeed.com/rachelzarrell/a-dumb-starbucks-coffee-shop-is-the-newest-craze-in-californ. Several news articles have also posted a picture of Dumb Starbucks’ FAQ, in which the restaurant makes clear that it is “not affiliated in any way with Starbucks Corporation” and that they are “simply using their name and logo for marketing purposes,” claiming the fair use defense of parody. See ‘Dumb Starbucks’ Mystery: Who’s Behind the Faux Coffee Front in Los Feliz?, SCPR (Feb. 9, 2014, 11:55 AM), http://www.scpr.org/news/2014/02/09/42085/dumb-starbucks-coffee-shop-opens-in-los-feliz/. The company asserts that “[b]y adding the word ‘dumb,’ [they] are technically ‘making fun’ of Starbucks,” allowing them fair use of the trademarks as a work parody art. The company argues that the storefront is their gallery featuring their coffee art.

Certainly, the creators of Dumb Starbucks have an interesting experiment on their hands. The Starbucks name and the mermaid logo are registered trademarks of Starbucks Corporation for numerous classes of goods and services. As such, Starbucks has an obligation to enforce their rights to the marks. The question is whether Dumb Starbucks can actually claim the defense of fair use by parody that they promote in their FAQs. First, Starbucks must proven infringement of their marks. The relevant test is “likelihood of confusion” under sections 32 and 43(a) of the Lanham Act, which can be established with a showing of the probability (actual confusion not required) that consumers will be confused, demonstrated by applying one of the multi-factor analyses, such as the Polaroid factors. These factors include: (1) the strength of the senior user’s mark; (2) the degree of similarity between the marks; (3) “the proximity of the products”; (4) “the likelihood that the prior owner will bridge the gap”; (5) “actual confusion”; (6) the junior user’s “good faith in adopting its own mark”; (7) “the quality of the [junior user]’s products”; and (8) “the sophistication of buyers.” Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961). Absent consumer confusion, there is no cause of action. It is interesting to note that Starbucks spokesperson Megan Adams, in reply to questions about the parody store, stated, “It’s obviously not a Starbuck.” See ‘Dumb Starbucks’ Mystery, supra (internal quotation marks omitted). Running through the Polaroid factors shows that Starbucks may have a strong case for likelihood of confusion: the Starbucks mark is a strong mark; the Dumb Starbucks marks are nearly identical (differentiated only by the addition of the adjective “Dumb”); the products are identical; there is no gap for Starbucks to bridge between the goods offered for sale; and, Dumb Starbucks has a stated bad faith in using the marks (“We are simply using their name and logo for marketing purposes.”). However, actual confusion might be a toss-up and, for better or worse for Starbucks, coffee drinkers are rather particular consumers with strong preferences for their cup of joe.

Arguendo, let’s assume there is actual confusion and a court could find a likelihood of confusion. A bleary-eyed caffeine addict might drive down the road and see the familiar green circle housing the mermaid queen of Sumatran roast and venture into the store without thinking further. While in the store, the consumer might recognize that the menu labels all the beverages as “Dumb,” but, since it serves coffee and she is already in the store, may proceed to purchase anyway. With a finding of likelihood of confusion, Dumb Starbucks has to rely on their parody defense. As the authors of McCarthy on Trademarks and Unfair Competition note, “the cry of ‘parody!’ does not magically fend off otherwise legitimate claims of trademark infringement or dilution. … A non-infringing parody is merely amusing, not confusing.” 6 MCCARTHY ON TRADEMARKS & UNFAIR COMPETITION § 31:153 (4th ed.). Parody does not operate as a pure defense to trademark infringement, but prevents the finding of a likelihood of confusion; that is, with an effective parody, a reasonable consumer will understand that there is no affiliation between the owners of senior mark and the parodying mark.

That raises the question of if Dumb Starbucks is more like the advertisements for Michelob Oily from Anheuser-Busch, Inc. v. Balducci Publications, 28 F.3d 769 (8th Cir. 1995) or Chewy Vuiton dog toys, Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007). In Balducci, an advertisement mimicking Michelob beer advertisements was used to parody a Shell oil spill in a source of Anheuser-Busch’s water supply, which the Eighth Circuit found had taken insufficient steps to insure that “viewers adequately understood this was an unauthorized editorial.” 28 F.3d at 777. That court did not permit the infringing use of the Anheuser-Busch’s trademarks despite the claimed parody. Similarly, in Hard Rock Cafe Licensing Corp. v. Pacific Graphics, Inc., 776 F. Supp. 1454 (W.D. Wash. 1991), the court disallowed the use of the “Hard Rain” logo mark, which was similar to the Hard Rock Cafe logo mark, stating that “[a] defendant’s claim of parody will be disregarded where the purpose of the similarity is to capitalize on a famous mark’s popularity for the defendant’s own commercial use.” Id. at 1462 (internal citation omitted). These cases point to a finding that Dumb Starbucks, which closely imitates the Starbucks marks and does so for the purpose of their own commercial gain, while only disclaiming affiliation in their FAQ, should be enjoined from using the Starbucks marks despite their parody claim.

On the other hand, Haute Diggity Dog involved the imitation of the luxury brand Louis Vuitton’s trademarks on chew toys for pets, which was found to be successful parodies. 507 F.3d at 256-57. Dumb Starbucks’ FAQ makes clear that it is not affiliated with Starbucks. In the way that Louis Vuitton likely would not make cheap rubber imitations of its luxury goods, Starbucks would not open a restaurant calling the parent company “dumb.” Similarly to Balducci, though, the marks being used are nearly identical (at least on first impression) and, as pointed out with our caffeine addict above, actual confusion probably can occur. It would have been interesting to see how a parody claim might have played out in The North Face Apparel Corp. v. Williams Pharmacy, Inc., No. 4:09CV2029RWS, 2010 WL 546318 (E.D. Mo. Feb. 9, 2010), a case in which The North Face obtained a permanent injunction against the sale of apparel bearing the confusingly similar mark “The South Butt,” but that case never made it to trial.

Another thing is certain: Starbucks will have to respond one way or another to protect their trademarks. The situation with Dumb Starbucks is highly similar to the Hard Rock Cafe case. While a consumer may be able to determine that the parody restaurant is not affiliated with Starbucks, the stated purpose is to capitalize on Starbucks’ popularity. Since no single Polaroid factor is determinative, and given the bad faith of Dumb Starbucks, Starbucks should be able to prevail in protecting their marks. Allowing Dumb Starbucks to coexist in the same industry as Starbucks would set a bad precedent by allowing undesirable free riding.

IP Discussions Around the Web

IP Discussions Around the Web

  • From Legal Theory Blog, Rosenblatt on Intellectual Property’s Negative Space:

    The result suggests areas of misalignment between traditional intellectual property rights and remedies and the interests of many creators and innovators.

  • From the Originalism Blog, a look at the constitutional history of copyright from Randolph May and Seth Cooper.
  • Madisonian has a take on Joffe v. Google, the important case from the 9th Circuit involving whether Google’s intercepting local Wi-Fi signals might run afoul of the Wiretap Act.
  • TechDirt has an article explaining how frequent patent litigant Eli Lilly has sued Canada for… refusing to give it a patent. Apparently we need to keep an eye on NAFTA, not just TRIPS and PCT.
  • Patently-O has a guest post on Lighting Ballast v. Phillips oral argument. This is an important (en banc) case where the Federal Circuit is re-visiting the rule in Cybor Corp. about de novo review of claim construction. We’ll be paying attention to what happens here.

And we’re back

It’s a new semester, and we’re continuing to aggregate various IP-related stories from around the web. As always, if you think there’s something we should highlight, e-mail us.

  • The Legal Theory blog brings to our attention Lisa Oullette discussing an interesting take on Patent Experimentalism:

    Local actors — patent examiners, judges, or even individual countries — should be granted broad discretion to meet centrally defined framework goals, with the requirement of defending their decisions through robust peer review.

  • Bernard Chao guests blogs at Patently-O about interpreting CLS Bank v. Alice—an important subject-matter case we’ve previously covered.
  • Over at Concurring Opinions, Irina Manta discusses whether Federal Criminal law can punish IP violations—here, here, and here. Michael Ramsey of the Originalism Blog comments here.

Smoke and Mirrors: Lorillard Tobacco. v. California Imports

by Maximilian Meese

In a time when tobacco companies operate in a haze of public scrutiny and health concerns, it is difficult for cigarette producers to keep a favorable trademark. For Lorillard, the oldest continuously operated tobacco company in the U.S., the struggle is no less real. Though Lorillard may not be a household name, they would like to think otherwise of their flagship brand: Newport cigarettes. With simple packaging and a well-developed trademark, Newport cigarettes have crawled to the top of the menthol cigarette market; over the entire cigarette industry, they sell second only to Marlboro.

It comes as no surprise that other producers might be tempted to profit from emulating such a recognizable brand. What Lorillard may not have expected is for the emulation to come from Global Market Direct (“Global”), a marketer of “aromatic potpourri herbal blends.” Translated from those over-flattering terms, Global advertised a synthetic marijuana substitute, or “spice” as peddlers often call it. The DEA has banned five separate ingredients of synthetic marijuana, but producers have found ways around restrictions by changing their recipes. At the time this particular conflict of interests began, head shops frequently, and legally, stocked their shelves with varieties of synthetic marijuana.

For Lorillard, imitation was far from flattery. Global’s line of “Newprot” herbs struck a little too close to home. Examine the difference for yourself:

newport

Subsequently, on November 5, 2010, Lorillard brought an action for infringement and counterfeiting of registered marks, trade dress infringement, unfair competition, and trademark dilution. Defendant brothers Majdi and Mohd Abujamous (acting as the spearheads behind the fictitious Global entity) eventually admitted to intentionally mimicking the Newport brand. On August 7, 2012, the court delivered an extremely easy decision: Majdi and Mohd are very, very liable.

Infringement: Check

Four counts of Lorillard’s claim pertained to infringement, and Lorillard easily hurdled the necessary elements: (1) Lorillard has a valid trademark; (2) defendants used the likeness of the mark; (3) defendants used the mark in commerce; (4) the mark was deployed in the sale, distribution, or advertising of goods or services; and (5) the use was likely to confuse consumers. A cursory glance at the facts would satisfy these first four elements, and the court agreed.

Determining if this imitation was likely to confuse consumers was albeit more nuanced, but no less in Lorillard’s favor. Following Pizzeria Uno Corporation v. Temple, the Fourth Circuit (our court of interest) relied on a list of seven factors to help determine consumer confusion: “(a) the strength or distinctiveness of the mark; (b) the similarity of the two marks; (c) the similarity of the goods/services the marks identify; (d) the similarity of the facilities the two parties use in their businesses; (e) the similarity of the advertising used by the two parties; (f) the defendant’s intent; and (g) actual confusion.”

The Newport mark is extremely strong, and the imitation is stunningly similar. Both goods are smoking products, sold out of similar stores with comparable point-of-sale advertising schemes. Finally, the Abujamous brothers testified to attempting a recognizable connection between the products. Despite not having actual confusion to point to, Lorillard clearly won.

Dilution: Check

The other count of Lorillard’s action related to dilution, which entails tests largely the same as infringement. Unsurprisingly, when a controversial product dresses up in the clothes of a nationally renowned brand, the result is quite predictable: the famous brand prevails. When the controversial product is known for injuries, illnesses, and toeing the blurry line of legality, the court spends more time signing the verdict against the defendants than it does applying these tests.

Bad Faith: Double Check

Lorillard won on every claim, and then some. By admission, the Abujamous brothers deliberately and willfully copied Newport, which worsened their position. Furthermore, their pre-trial conduct was so reprehensible that Lorillard collected on attorney’s fees and special costs. After avoiding summons and depositions, destroying physical evidence, and giving false testimony at every stage of the process, the Abujamous brothers were practically enemies of the court. In addition to the ruling for damages, Lorillard’s victory amounted to $290,000 in attorney’s fees, plus $18,000 in personal expenses.

The results of Lorillard are hardly novel. A two-bit operation of synthetic marijuana vendors pretended to be something they weren’t, and got punished for it. Despite this being an open-and-shut case, the lesson remains: keep your hands off other people’s trademarks. And when it comes to imitation, certainly don’t pick a brand as big as Newport cigarettes… you’ll only get burnt.

For more information on the case’s proceedings, see Lorillard Tobacco Co. v. Cal. Imports, LLC, 886 F. Supp. 2d 529, 2012 U.S. Dist. LEXIS 110871, 105 U.S.P.Q.2D (BNA) 1230, 2012 WL 4335290 (E.D. Va. 2012).

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